adr

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Beachbody, LLC v. Domains by Proxy Inc. / Chen Long

Case No. D2010-2061

1. The Parties

The Complainant is Beachbody, LLC of Santa Monica, California, the United States of America, represented by Cozen O'Connor, the United States of America.

The Respondent is Domains by Proxy Inc. of Scottsdale, Arizona, the United States of America / Chen Long of Xiamen, Fujian, the People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <insanityshops.net> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2010. On November 30, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 1, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 1, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 2, 2010.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2010.

The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on January 14, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

A. Complainant

The Complainant is a company incorporated in California, the United States of America and the owner of an international registration and two registrations in the United States of America for the trade mark INSANITY (the “Trade Mark”).

B. Respondent

The Respondent is an individual apparently with an address in China.

The disputed domain name was registered on July 31, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant made the following submissions in the Complaint.

The Complainant has been a leader in the field of in-home health, wellness, weight loss and fitness solutions since 1998. The Complainant’s well-known DVDs, kits and other products branded under the Trade Mark have achieved great success since their introduction in 2009. The Complainant has engaged in widespread promotion of its DVDs, kits and other products sold under the Trade Mark via the Internet, infomercials and televised promotional appearances.

The disputed domain name is confusingly similar to the Trade Mark. It comprises the Trade Mark together with the non distinctive word “shops”.

The website to which the disputed domain name is resolved (the “Website”) offers for sale unauthorised counterfeit products under the Trade Mark, as well as other unauthorised counterfeit products bearing other well-known trade marks of the Complainant.

The Respondent has no rights or legitimate interests in the disputed domain name and has registered and used the disputed domain name in bad faith to intentionally attract users, for commercial gain, to the Website, by creating confusion with the Trade Mark. The Respondent ignored the Complainant’s pre-filing correspondence seeking transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name.

UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).

It is also established that the addition of generic terms to the disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,
WIPO Case No. D2006-0189).

In the present case, the Panel concludes that the addition of the non distinctive word “shops”, a word frequently used in retailing and marketing of branded goods, does not serve to distinguish the disputed domain name from the Trade Mark in any way.

The disputed domain name contains the Trade Mark in its entirety.

The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.

The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name even if you have acquired no trade mark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by several years. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v.Tropic Web,
WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).

The Complainant has asserted that the Website is used by the Respondent to market counterfeit INSANITY goods. There can be no legitimate interest in the sale of counterfeits (Lilly ICOS LLC v. Dan Eccles,WIPO Case No. D2004-0750).

The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.

There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.

There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:

“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Complainant has submitted compelling evidence to suggest that the disputed domain name has been used to offer for sale counterfeit products under the Trade Mark via the Website. This is strong evidence of bad faith (Prada S.A. v. Domains For Life,WIPO Case No. D2004-1019).

The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.

Given the circumstances of this case, the Panel also considers the failure of the Respondent to respond to the Complainant’s pre-filing correspondence and to file a Response to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).

For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <insanityshops.net> be transferred to the Complainant.